Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

 

Issue date:  November 30, 2020

 

Notice of Incomplete Response to a Final Office Action – Additional Time Granted

 

Deadline for responding to this notice.  To avoid partial abandonment of this application, the USPTO must receive one or both of the following submissions within the stated timeframe.

 

(1)        File a complete response to the outstanding issues listed below that the USPTO receives within (1) thirty days of the issue date above, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer; and/or

 

(2)        File a notice of appeal that the Trademark Trial and Appeal Board receives within six months from the issue date of the previous final Office action.  This notice of incomplete response does not extend the time for filing an appeal. 

 

Applicant granted additional time to resolve outstanding issues.  On October 29, 2020, applicant filed a timely request for reconsideration that did not resolve all the issues in the April 29, 2020, final Office action.  Because applicant made a bona fide attempt to advance the examination of the application in the response in compliance with 37 C.F.R. §2.65(a)(2), applicant is being granted additional time to address the following refusals and/or requirements in the previous Office action: 

 

            •  Requirement Regarding the Identification and Classification of Goods and Service

 

These refusal(s) and/or requirement(s) are maintained and continued.  See TMEP §713.02. 

 

The following refusal(s) and/or requirement(s) are satisfied:

 

            •   Requirement Regarding Color Claim and Mark Description

 

Requirement for Clarification of the Identification of Goods and Services

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “subsurface assemblies for use in geothermal, water, oil and gas wells used for the extraction of oil, gas or water comprising sleeves, sliding sleeves, jetting assemblies, packers, activation devices, darts, latching mechanisms, balls, collets, and coiled tubing driven tools” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the nature of the goods.

 

The wording “house mark for downhole tools for wellbore completion and production, namely, electrical, acoustic and optical monitoring devices for monitoring downhole properties and conditions of wellbore equipment, fluids, geological formations and reservoirs sold as components of oil, gas, and geothermal subterranean completion systems” must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass Class 09 monitoring devices.

 

The wording “house mark for consulting, design and commissioning and integration services for industrial control systems” in the identification of goods for International Class 37 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass Class 37 consultation services and Class 42 design services.

 

The wording “House mark for well measurement, monitoring and treatment services in the oil and gas field” and “house mark for measurement, monitoring and treatment services of chemicals and petrochemicals” in the identification of goods for International Class 40 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass Class 42 measurement and monitoring services and Class 40 materials treatment services.

 

The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with additions and alterations in bold type. The italicized wording includes additional guidance and suggestions and the wording appearing with a strikethrough should be deleted.

 

Applicant may adopt the following identification of goods and/or services, if accurate:

 

 CLASS 01 is definite

 

CLASS 06 is definite

 

CLASS 07: House mark for machines, machine tools and machine parts for use in the oil and gas, geothermal, and subterranean drilling fields, namely, drilling and completions systems comprising directional drilling tools, frac balls, frac sleeves, frac plugs, frac darts, frac ball sets, liner hangers, and casing packers; flow control valves for controlling the flow of oil in pipelines being machines parts, flow regulators being machine parts, mandrels being machine parts, valves being machine parts, wellhead machines; hydraulic fracturing equipment, namely, fracturing pumps; cutting elements for drill bits being parts for drill bits for subsurface drilling, drill bits for subsurface rock and earth formation drilling spears; subsurface assemblies for use in geothermal, water, oil and gas wells used for the extraction of oil, gas or water, namely, {specify the nature of the goods, e.g., earth drilling machines} comprising sleeves, sliding sleeves, jetting assemblies, packers, activation devices, darts, latching mechanisms, balls, collets, and coiled tubing driven tools; house mark for overshot machines, grapple buckets and blades for making earth milling and drilling machines, and whipstocks; house mark for oilfield cementing and floating machines and machine tools, namely, float collars, float shoes, and guide shoes, casing scrapers and brushes being machine parts, setting tools for setting and operating downhole tools, perforating guns for perforating casing, liners and geological formations, each of the foregoing comprised of or primarily comprised of metallic parts used in oil and gas and geothermal well completion; house mark for downhole tools for wellbore completion and production, namely, parts for earth drilling machines being electrical, acoustic and optical monitoring devices for monitoring downhole properties and conditions of wellbore equipment, fluids, geological formations and reservoirs sold as integral components of oil, gas, and geothermal subterranean completion machines; house mark for artificial lift systems comprising power operated lifts and pumps for use in oil and gas wells and components therefor, namely, gas, mechanical and hydraulic lift systems with pumps including for use in wells and at wellsites; house mark for metallic and non-metallic rotatable drill bits, namely, polycrystalline diamond (PCD) compact drill bits, tricone roller cone bits, hybrid bits, coring bits and reamers as well as cutters therefor; house mark for turbines not being for land vehicles, machine compressors, valves being parts of machines, centrifugal pumps, and integral structural parts therefor

 

CLASS 09: House mark for measurement and control apparatus for use in the oil and gas field, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for measuring, detecting and monitoring instruments for industrial applications, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for fluid analysis instruments, namely, {specify, e.g., instruments for the analysis of oil for industrial applications}; house mark for nondestructive testing equipment used in industrial applications, namely, {specify the common commercial name of the goods, e.g., electrical eddy current test equipment, electronic ultrasound flaw detectors} radiography, remote visual, ultrasound, eddy current, predictive corrosion management applications; house mark for downloadable computer software for use in data collection, transmission, integration, visualization, analysis and storage in the field of oil and gas; house mark for downloadable computer software for use in connection with a network of physical objects, devices, vehicles, and buildings which are embedded with electronics, software, sensors and network connectivity all of which enable these objects, devices, vehicles, and buildings to collect and exchange and report data in the field of oil and gas; house mark for downloadable software for use in measuring and analyzing data retrieved from oil and gas wells; house mark for electronic and telemetry instruments for use in the oil and gas industry, namely, pulsers and pulse decoding technology, wired pipe technology, sensors, detectors, fluid analyzers, calibrators; house mark for measurement and control equipment for oil and gas, aerospace, automotive, power and energy industries, namely, gas sensors for measuring gas concentration, gasometers

 

CLASS 17: House mark for non-metal flexible pipes and tubing; house mark for non-metal junctions not for metal pipes; all for use in the oil and gas industry

 

CLASS 37: House mark for consulting services in the field of oil and gas, namely, consultation in the field of offshore oil and gas facility construction; house mark for consulting services in the field of {specify the field of consultation, e.g., installation of carbon equipment, control systems, and machinery} for use incarbon capture and sequestration; house mark for technical consulting services relating to the installation of equipment, control systems, machinery, and facility construction, all in the oil and gas field; house mark for consulting services related to the design, installation and maintenance of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for {specify the nature of the services, e.g., consulting in the field of maintenance of measurement and inspection equipment for use} in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for consulting in the maintenance of industrial control systems; house mark for oil and gas drilling and construction completion; house mark for consulting services in the field of oil and gas, namely, consulting in the field hydraulic fracturing of subsurface geologic formations and reservoirs to enhance well production; house mark for consulting services in the field of oil and gas, namely, consultation in the field of well drilling; house mark for drilling, steering, logging, and coring oil and gas wells

 

CLASS 40: House mark for well measurement, monitoring and treatment services in the oil and gas field; house mark for equipment treatment services in the oil and gas field; house mark for measurement, monitoring and treatment services of chemicals and petrochemicals; house mark for compressor, turbine, and centrifugal pump treatment services; house mark for consulting services in the field of oil and gas, namely, technical consulting in the field of oil and gas production and processing; house mark for the production of oil and gas

 

CLASS 41 is definite

 

CLASS 42: House mark for oil and gas drilling, completion, production and testing services, namely, drilling and completing wells as well as testing the functionality of apparatus and instruments in the nature of oil and gas equipment; house mark for the exploration and searching of oil and gas; house mark for providing industrial measurement and control services; house mark for technical assessment, evaluation and optimization for turbine, compressor, centrifugal pump use in oil and gas and industrial applications; house mark for software as a service (SAAS) services featuring software that combines autonomic computing and cognitive artificial intelligence engineering technology for use in the oil and gas industry; house mark for software as a service (SAAS) services featuring software for use in collecting, analyzing, and delivering data and information to optimize performance in the industrial process, equipment and production systems across the upstream, midstream and downstream segments of the oil and gas industry; house mark for engineering consultation services in the field of carbon capture and sequestration; house mark for consulting services related to the design of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for measurement and inspection services for quality control purposes in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for design and IT integration services for industrial control systems; house mark for well measurement and monitoring services for quality control in the oil and gas field; house mark for measurement and monitoring services for quality control of chemicals and petrochemicals

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

PARTIAL ABANDONMENT ADVISORY

 

Failure to timely resolve the outstanding issues will result in partial abandonment of the application.  The following goods and services will be held abandoned and deleted from the application: 

 

CLASS 07: subsurface assemblies for use in geothermal, water, oil and gas wells used for the extraction of oil, gas or water comprising sleeves, sliding sleeves, jetting assemblies, packers, activation devices, darts, latching mechanisms, balls, collets, and coiled tubing driven tools; house mark for downhole tools for wellbore completion and production, namely, electrical, acoustic and optical monitoring devices for monitoring downhole properties and conditions of wellbore equipment, fluids, geological formations and reservoirs sold as components of oil, gas, and geothermal subterranean completion systems;

 

CLASS 09: house mark for fluid analysis instruments; house mark for nondestructive testing equipment used in industrial applications, namely, radiography, remote visual, ultrasound, eddy current, predictive corrosion management applications;

 

CLASS 17: House mark for non-metal flexible pipes and tubing; house mark for junctions not for metal pipes

 

CLASS 37: house mark for consulting services in the field of carbon capture and sequestration; house mark for measurement and inspection services in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for consulting, design and commissioning and integration services for industrial control systems; house mark for consulting services in the field of oil and gas, namely, geologic formation and reservoir management consultation; house mark for consulting services in the field of oil and gas, namely, well planning consultation

 

CLASS 40: House mark for well measurement, monitoring and treatment services in the oil and gas field; house mark for measurement, monitoring and treatment services of chemicals and petrochemicals;

 

CLASS 42: House mark for oil and gas drilling, completion, production and testing services, namely, drilling and completing wells as well as testing the functionality of apparatus and instruments in the nature of oil and gas equipment

 

The application will then proceed with the following goods and services only: 

 

CLASS 01: House mark for chemicals and chemical compositions for use in the oil and gas field; house mark for chemicals and chemical compositions for use in petrochemical and industrial applications

 

CLASS 06: House mark for subsea wellheads and related equipment, namely, subsea manifolds of metal for pipelines, subsea jumpers of metal, subsea metal pipe connectors, flowline connectors and tubes of metal for subsea pipelines; house mark for expandable metal tubular products, namely, sand screens, casing patches, and expandable liners and liner hangers; house mark for metal pipes, tubing and seals; house mark for junctions for metal pipes

 

CLASS 07: House mark for machines, machine tools and machine parts for use in the oil and gas, geothermal, and subterranean drilling fields, namely, drilling and completions systems comprising directional drilling tools, frac balls, frac sleeves, frac plugs, frac darts, frac ball sets, liner hangers, and casing packers; flow control valves for controlling the flow of oil in pipelines being machines parts, flow regulators being machine parts, mandrels being machine parts, valves being machine parts, wellhead machines; hydraulic fracturing equipment, namely, fracturing pumps; cutting elements for drill bits being parts for drill bits for subsurface drilling, drill bits for subsurface rock and earth formation drilling spears; house mark for overshot machines, grapple buckets and blades for making earth milling and drilling machines, and whipstocks; house mark for oilfield cementing and floating machines and machine tools, namely, float collars, float shoes, and guide shoes, casing scrapers and brushes being machine parts, setting tools for setting and operating downhole tools, perforating guns for perforating casing, liners and geological formations, each of the foregoing comprised of or primarily comprised of metallic parts used in oil and gas and geothermal well completion; house mark for artificial lift systems comprising power operated lifts and pumps for use in oil and gas wells and components therefor, namely, gas, mechanical and hydraulic lift systems with pumps including for use in wells and at wellsites; house mark for metallic and non-metallic rotatable drill bits, namely, polycrystalline diamond (PCD) compact drill bits, tricone roller cone bits, hybrid bits, coring bits and reamers as well as cutters therefor; house mark for turbines not being for land vehicles, machine compressors, valves being parts of machines, centrifugal pumps, and integral structural parts therefor

 

CLASS 09: House mark for measurement and control apparatus for use in the oil and gas field, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for measuring, detecting and monitoring instruments for industrial applications, namely, control valves for regulating the flow of gases and oils, flow meters, sensors, detectors, indicators, analyzers, switches, calibrators, pressure controllers, temperature measuring instruments, temperature controlling instruments; house mark for downloadable computer software for use in data collection, transmission, integration, visualization, analysis and storage in the field of oil and gas; house mark for downloadable computer software for use in connection with a network of physical objects, devices, vehicles, and buildings which are embedded with electronics, software, sensors and network connectivity all of which enable these objects, devices, vehicles, and buildings to collect and exchange and report data in the field of oil and gas; house mark for downloadable software for use in measuring and analyzing data retrieved from oil and gas wells; house mark for electronic and telemetry instruments for use in the oil and gas industry, namely, pulsers and pulse decoding technology, wired pipe technology, sensors, detectors, fluid analyzers, calibrators; house mark for measurement and control equipment for oil and gas, aerospace, automotive, power and energy industries, namely, gas sensors for measuring gas concentration, gasometers

 

CLASS 37: House mark for consulting services in the field of oil and gas, namely, consultation in the field of offshore oil and gas facility construction; house mark for technical consulting services relating to the installation of equipment, control systems, machinery, and facility construction, all in the oil and gas field; house mark for consulting services related to the design, installation and maintenance of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for oil and gas drilling and construction completion; house mark for drilling, steering, logging, and coring oil and gas wells

 

CLASS 40: house mark for equipment treatment services in the oil and gas field; house mark for compressor, turbine, and centrifugal pump treatment services; house mark for consulting services in the field of oil and gas, namely, technical consulting in the field of oil and gas production and processing; house mark for the production of oil and gas

 

CLASS 41: House mark for educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of oil and gas exploration; house mark for educational services, namely, training in the use and operation of turbines, compressors and centrifugal pumps; house mark for educational services, namely, training in the use and operation of monitoring, inspection, testing and control equipment

 

CLASS 42: house mark for the exploration and searching of oil and gas; house mark for providing industrial measurement and control services; house mark for technical assessment, evaluation and optimization for turbine, compressor, centrifugal pump use in oil and gas and industrial applications; house mark for software as a service (SAAS) services featuring software that combines autonomic computing and cognitive artificial intelligence engineering technology for use in the oil and gas industry; house mark for software as a service (SAAS) services featuring software for use in collecting, analyzing, and delivering data and information to optimize performance in the industrial process, equipment and production systems across the upstream, midstream and downstream segments of the oil and gas industry; house mark for engineering consultation services in the field of carbon capture and sequestration; house mark for consulting services related to the design of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for measurement and inspection services for quality control purposes in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for design and it integration services for industrial control systems; house mark for well measurement and monitoring services for quality control in the oil and gas field; house mark for measurement and monitoring services for quality control of chemicals and petrochemicals

 

See 37 C.F.R. §2.65(a); TMEP §§715.03(a)(ii)(C), 718.02(a).

 

 

CONTACT INFORMATION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

Applicant may view this notice and the previously issued final Office action in the Trademark Status and Document Retrieval (TSDR) system. 

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Christine Martin/

Examining Attorney

Law Office 104

571-272-1630

christine.martin@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 30, 2020 for

U.S. Trademark Application Serial No. 88643061

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Christine Martin/

Examining Attorney

Law Office 104

571-272-1630

christine.martin@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 30, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”